Mr. Aubert de Villaine describes the wine of Domaine de la Romanée-Conti, also known as DRC, as having an "Eternal Touch." When tasting DRC meticulously and with patience, one might feel as though they are getting closer to something timeless.
De Villaine's statement has resonated in two recent trade mark oppositions where the Directorate General of Intellectual Property (DGIP) in Indonesia rejected marks that were confusingly similar, even though DRC itself is not registered as a geographical indication (GI) in the country. This decision reinforces a previous ruling concerning the GI "Huile Essentielle de Lavande de Haute-Provence" (refer to our article published https://www.worldtrademarkreview.com/article/lavender-wins-against-unfragrant-infringer ) and brings hope for owners of unregistered GIs in Indonesia to safeguard their valuable products and know how in the Indonesian market.
Law on Trade Mark & Geographical Indications Law
On 27 October 2016 Indonesia's House of Representatives passed a new Trademark & Geographical Indications Law (Law No. 20 Year 2016) making the registration of a GI in Indonesia (art. 53.1) or through an international agreement (art 55.1) mandatory as a condition for entitlement to the protection afforded by the new law. GI owners raised concerns against the new law which appears to diminish their rights against potential infringers when compared to the previous legislation which did not require any registration. Furthermore, Indonesia is not yet a member of the above-mentioned Lisbon Agreement.
Facts
On August 16, 2021, the Institut National de l'Origine et de la Qualité (INAO), a public agency of the French Ministry of Agriculture, filed oppositions against the word mark "Conti" (App. No. D222021041564) and semi-figurative mark (App. No. D222021037781) aplied in the name of an Indonesian company in Class 33 for wine.
While the Domaine de la Romanée-Conti (DRC) enjoys protection as a Controlled Appellation of Origin in France and as a Protected Designation of Origin (PDO) in the European Union, it is not registered in Indonesia. The absence of registration would not have posed an issue under Indonesia's previous trademark law (No. 15/2001), which forbade the registration of a mark that was "essentially or entirely identical to a Geographical Indication that was already recognized" (Art. 6.1). Put differently, during that period, whether registered or not, GIs held enforceable rights if they were already acknowledged and known.
Rulings
In its oppositions the INAO has argued the confusing similarity between the DRC and the opposed marks, and the applicant's bad faith. The DGIP has ruled in INAO's favor and rejected the applied marks due to similarity with the DRC and found that the submitted evidence which includes the registration of the GI in France and in the EU are sufficient.
Is the scope protection for foreign GIs in Indonesia adequate?
The Law No. 20 of the year 2016 establishes a system for GI registration, making it mandatory to register either in Indonesia or through an international agreement to be eligible for the protection it provides. The two decisions suggest that the term "registered geographical indication through an international agreement" encompasses agreements that Indonesia is not a signatory to, such as the European Union Council Regulation (EC) No 510/2006, which deals with the protection of geographical indications and designations of origin for agricultural products and foodstuffs.
While the two decisions had favorable outcomes, it remains prudent to register GIs in Indonesia. Registered GI proprietors gain various advantages, such as the ability to initiate legal actions against unauthorized GI users before a court (Art. 69 (1)). Additionally, registration acts as prima facie evidence of the GI's authenticity, placing the burden of proof on any party challenging its legitimacy in legal proceedings.
Rouse acted for the INAO and DRC in the two oppositions.
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